Intellectual Property Enterprise Court

IP-2020-000029 - [2024] EWHC 3058 (IPEC)

Fecha: 28-Nov-2024

Must fit

Must fit

16.

Mr Wakefield raised an issue about ‘must fit’. This was done for the first time after the Order of 11 July 2024. Normally I would have disregarded it because the hearing which led to that Order was, in effect, the CMC in the action and there was no good reason why either side should be permitted to raise further issues for the trial. However, the parties are litigants in person, so I said I would deal with the point.

17.

This is s.1C(2) of the Registered Designs Act 1949 (“the 1949 Act”):

‘(2) A right in a registered design shall not subsist in features of appearance of a product which must necessarily be reproduced in their exact form and dimensions so as to permit the product in which the design is incorporated or to which it is applied to be mechanically connected to, or placed in, around or against, another product so that either product may perform its function.’

18.

This is often called the ‘must fit’ exclusion from registered design protection. It is similar in effect to the equivalent exception to UK unregistered design right protection in s.213(3)(b)(i) of the Copyright, Designs and Patents Act 1988. In Action Storage Systems Limited v G-Force Europe.Com Ltd [2016] EWHC 3151 (IPEC), the following suggestion was made:

‘There will be a limit to the exclusion of design right protection under this provision. I take the view that the shapes of the relevant parts of the connecting articles must be such that there is a degree of precision in the interrelationship between one article and the other, i.e. the designs afford some precision in the fit. For example, it would be surprising if the handle of a coffee mug were refused design protection solely because it is shaped to enable a human hand to connect to it to pick up the mug.’

19.

The example there does not exactly translate to the law of registered designs because in s.1C(2) the must fit exclusion applies only as between two products. A ‘product’ is defined in s.1(3) as industrial or handicraft item so that the fit could not be with a feature of the human body (unlike the position for UK unregistered designs, see Ocular Sciences Ltd v Aspect Vision Care Ltd [1997] RPC 289). Nonetheless, I think the general point holds good. The tribunals of what was then the Office for Harmonization in the Internal Market (OHIM) have found that the exclusion applies where one product fits another ‘like a key to a key hole’ (see the helpful summary in Russell-Clarke and Howe on Industrial Designs, 10^th ed, at 2-096, footnote 249.).

20.

The OHIM decisions do not seem to say expressly whether something less precise than the fit of a key in a key hole would benefit from the exclusion. However it seems to me clear that while a letter box tool must fit through the letter box and be suitable for close contact with objects on the inside of the door, there is little else in the way of a fit required. The must fit exclusion does not apply to the present case.